Control Protect and Leverage?
Why is this the name of our Blog? Simply because these are the steps that every individual or company should follow concerning their Intellectual Property (IP) no matter what type of IP they own. In fact, there really is no point to having IP if all these steps are not followed.
My next three Blog entries will discuss each step in greater detail with today being about "CONTROL".
It behooves you to have an IP agreement in place with all your employees or at the very least those involved in marketing and product development. The agreement should in no uncertain terms make it clear that the company owns all intellectual property developed by the employee on company time, using company assists, and/or that relating to the company's area of business. Often, the IP agreement is made part of the employment contract.
Further, companies should have a written and enforced trade secrets policy. Trade secrets are information developed by a business that is not readily or easily available to those outside the business. Trade secrets can include things such as customer lists and other proprietary information that if obtained by a competitor would potentially hurt your competitive position in the marketplace. If an employee leaves your company for a competitor and takes trade secret information with him, you can sue the former employee and competitor to return the information and enjoin them from making use of it . However, in order to be successful the trade secret information must be treated and handled properly by the company and its employees. For example, only those employees with a need to know should have access to any particular piece of sensitive information. Further, any information that is intended as a trade secret should be appropriately marked. By having a written policy and procedures to see that the policy is enforced, a company's chances of prevailing in a trade secrets dispute are greatly enhanced.
Much too often we have clients come into our office that want to patent their invention, but they are no longer able to legally do so. I have had clients come close to begging for me to draft and file a patent application for them. The primary reason that they cannot receive a patent is that they have either been using the invention in public for more than a year in an uncontrolled manner or they have offered the invention to sale to someone more than a year prior to coming to me. Incidently, when it comes to most foreign patent rights, you don't even have one year. Rather, the bar to filing an application occurs immediantly once you disclose an invention to the public!
Avoiding uncontrolled public use or disclosure is a relatively simple: have whoever you are disclosing the invention to sign an Non-Disclosure Agreement (NDA). A sample NDA is available on our website.
Does this mean you should have close friends, children and spouses sign an NDA? Well, I am unaware of any specific instances where an inventor has lost his/her rights by disclosing the invention to people close to them, you always run the risk that these same people may disclose the idea to others and at that point you will have lost control of your invention and the one year clock will being to run. Generally, I don't see such disclosures to close friends and family as a problem but it never hurts and can only help if they sign an NDA.
An NDA will not prevent the one year clock from beginning to run if you offer the invention or an embodiment of the invention for sale even if the person or company your offering the invention to has signed an NDA. So be very careful about offering to sell your invention and if you do make such an offer, note the date and make sure to contact a patent attorney no later than a couple of months before the first anniversary of the date.
Concerning all issues relating to the CONTROL of your intellectual property, it is always wise to contact a qualified attorney (remember only patent attorneys are qualified to render legal advice about the procurement of a patent). Without a doubt, the most cost effective us of legal counsel is before an issue or problem arises. When it comes to IP, the old cliche, "an ounce of prevention is worth a pound of cure" is definitely true.